DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of invention I, claims 1-13 in the reply filed on 3/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 8/30/2022. It is noted, however, that applicant has not filed a certified copy of the CN202211058014X application as required by 37 CFR 1.55.
The instant claims are therefore being examined with a priority date of 7/24/2023, corresponding to the filing date of the parent application PCT/CN2023/108883.
Specification
The drawings filed 12/13/2023 do not provide a figure number and the description of the drawings refer only to “Figure”. The clarity of the record would be improved if the drawings and specification were amended to refer to “Figure 1”.
Status of the Claims
Claims 1-13 are pending and under current examination. Claims 14-20 are cancelled in the amendments to the claims filed 3/18/2026.
Claim Objections
Claims 8 and 9 are objected to because of the following informalities:
Claims 8 and 9 do not contain the conjunction before the last recited element of the claim and should be amended to read “…and the thickener is…” and “…and the preservative is…”, respectively.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-5 and 10-13 recite the limitation “pink red plum rechecking essence”. This renders the claim indefinite because the specification provides no definition as to what this ingredient may contain and it is not a term of the art. Therefore, it is impossible to discern the metes and bounds of the claim.
Claim 7 recites the limitations “moisturizing agent, moisturizer”. This renders the claim indefinite because it is not clear what may qualify an ingredient as a moisturizer but not a moisturizing agent and vice versa. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “moisturizer and moisturizing agent” in claim 7 is used by the claim to mean “two different ingredients,” while the accepted meaning is “both are the same.” The term is indefinite because the specification does not clearly redefine the terms separately.
Is moisturizer and moisturizing agent the same component? Applicants defined moisturizer only in the specification in paragraph [0022] of the published application, and it is drawn from the specification that both are the same.
Regarding claims 6, 8, and 9, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Pinsky (WO2018144093A2, publication year: 2018), in view of Gan (U.S. Patent No. 9,814,670, issue year: 2017), Scherner (U.S. Patent Application No. 2010/0061946, publication year: 2010), Chen (CN112704712A, publication date: 4/27/2021, citations refer to machine translation), and Goldsberry (U.S. Patent Application No. 2017/0304371, publication year: 2017).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1-6, Pinsky teaches a composition useful for regulating or improving mammalian skin condition. Such regulating methods are directed to preventing and/or retarding the appearance of dark circles under the eye of a mammal (pg. 35 lines 1-6). The compositions can include one or more purified, synthetic, or recombinant, collagen proteins (pg. 8 lines 27-28), sodium hyaluronate crosspolymer-2 (pg. 37 line 34), and bisabolol (pg. 23 line 16). The composition may also contain a safe and effective amount of one or more anti-wrinkle agents (pg. 24 lines 12-13). The composition may be formulated as a cream (pg. 22 line 7).
Regarding claims 6 and 7, Pinsky teaches that the composition may include a polyol, thickener, chelants, preservatives, buffers, water (pg. 20 line 26), emulsifier (pg. 20 line 1), and moisturizers (pg. 32, line 15), all read on auxiliary materials claimed by claims 6 and 7.
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1-6 and 10-13 Pinsky does not teach the inclusion of bifida ferment lysate, glucosylglycerol, eight treasure essence, or pink red plum rechecking essence. However, this deficiency is cured by Gan, Scherner, Ping, and Goldsberry.
Gan teaches an eye cream that can help firm up skin and increase microcirculation to reduce the appearance of under eye bags while also reducing the appearance of dark circles (col. 11 lines 1-4). The composition may contain 1% by weight bifida ferment lysate (col. 28, Table 9). Addition of bifida ferment lysate can enhance skin smoothness by suppressing protein-destructive enzymes known to cause elasticity loss and can reduce redness caused by irritation of the skin (col. 3 lines 53-61).
Scherner teaches an eye care cream comprising 10% by weight glucosyl glyceride [0075 Example 3]. The recipes according to the invention which comprise known anti-wrinkle active ingredient are advantageously suitable for the protection from esthetically unattractive changes in the skin, such as local hyperpigmentation, hypopigmentation and defective pigmentation [0065].
Chen teaches a traditional Chinese medicine composition for eye care that may be used as an additive in eye care products for dark circles [n0005]. The composition comprises Ligusticum chuanxiong, poria cocos, atractylodes macrocephala, Bletilla striata, ampelopsis japonica, artificial bezoar, pearl, and borneol [n0030 and n0032]. The instant specification defines eight-treasure essence stock solution to include chuanxiong root extract, poria cocos sclerotium extract, atractylodes extract, bletilla striata extract, ampelopsis japonica root extract, artificial bezoar, pearl extract, and borneol [0017 of instant specification], therefore the Examiner considers the composition of Ping to read on the “eight-treasure essence stock solution” limitation of the instant claims.
Goldsberry teaches an eye cream [0067] that may contain an anti-wrinkle agent that exhibits reductions in dark circles around the eyes [0037]. Suitable anti-oxidant additives include Kakadu Plum fruit extract. In some embodiments, the anti-oxidant may also act as an anti-wrinkle agent [0069]. The Examiner considers the Kakadu Plum fruit extract to read on the “pink red plum rechecking essence” limitation of the instant claims.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1-6 and 10-13, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional cosmetic ingredients used in eye creams for alleviating dark circles. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
The parts by weight of the ingredients present in the composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amounts of each ingredient in order to best achieve the desired results as such would provide advantageous cosmetic effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, each reference relied upon in the rejection teaches that the ingredients embraced by the instant claim all contribute the cosmetic effects of an eye care product, particularly in regard to anti-wrinkle or anti-dark circle effects. The Examiner considers it prima facie obvious to optimize the weight of each ingredient present in a cosmetic composition, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of each ingredient would have a direct effect on the cosmetic effects rendered by the eye care product and would therefore be an optimizable variable.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pinsky (WO2018144093A2, publication year: 2018), in view of Gan (U.S. Patent No. 9,814,670, issue year: 2017), Scherner (U.S. Patent Application No. 2010/0061946, publication year: 2010), Chen (CN112704712A, publication date: 4/27/2021, citations refer to machine translation), and Goldsberry (U.S. Patent Application No. 2017/0304371, publication year: 2017), as applied to claims 1-7 and 10-13 above, and further in view of Gerardi (U.S. Patent Application No. 2014/0356295, publication year: 2014).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Pinsky, in view of Gan, Scherner, Ping, and Goldsberry, renders obvious the relevant limitations of claims 1 and 7 above.
Regarding claim 8, Pinsky teaches cosmetic composition may include shea butter and cetearyl alcohol (Claim 19). Pinsky also teaches that the composition may include an emulsifier (pg. 20 line 1).
Regarding claim 9, Pinsky teaches that the cosmetic composition may include glycerol, sorbitol, propylene glycol (pg. 32 lines 21-22), gallic acid and its alkyl esters, especially propyl gallate (pg. 25 line 34), phenoxyethanol (pg. 30 line 28), chlorphenesin (pg. 36 line 34), methylparaben, and propylparaben (pg. 34 line 21). Pinsky also teaches that the composition may include chelants and preservatives (pg. 20 line 26).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 8 and 9, Pinsky does not teach the inclusion of an emulsifier or chelating agent embraced by the instant claims. However, this deficiency is cured by Gerardi.
Gerardi teaches a body moisturizing cream [0011] that may contain sorbitan palmitate, sorbitan olivate and cetearyl olivate as emulsifiers [0056] and disodium EDTA [0071]. The composition may also contain cetyl palmitate [0058]. With regards to the “emulsifier” limitations of instant claim 8, the prior art teaches the same cetyl palmitate as claimed and therefore, the emulsifier properties are necessarily present; the Examiner directs attention to MPEP 2112.01 (II) which states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 8 and 9, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional emulsifiers and chelating agents used in cosmetic cream compositions. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Conclusion
No claims are allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
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